Overvier of Intellectual Property High Court, 2019 (Administrative Case) No. 10025
Case Overview
- Case: Intellectual Property High Court, 2019 (Gyo-Ke) No.10025
- Parties Involved:
Plaintiff/Patent Holder:Amilex Pharmaceuticals Incorporated
Defendants: Commissioner of the Japan Patent Office
- Key Issue: Whether the “excluding claim” meets the support requirement under Japanese patent law
Summarization of the case
The present patent application concerns a gas dissolution apparatus that maintains a liquid in a supersaturated state while transferring it through a tubular path serving as a pressure-reducing transfer means. The claim specifies that the pressure-reducing transfer means is “a narrow tube having an inner diameter greater than 1.0 mm and up to 3.0 mm, excluding tubes with a length of 0.8 m or less.”
In the JPO’s decision, the examiner argued that while Example 10 described a 1.4 m tube capable of generating supersaturated hydrogen water, there was no explicit disclosure that a tube longer than 0.8 m could reliably maintain the supersaturated state. Therefore, the phrase “excluding tubes of 0.8 m or less” was deemed unsupported.
The court recognized that the specification discloses a gas dissolution apparatus designed to dissolve gas into liquid in a supersaturated state and to maintain that state stably. The apparatus achieves this by employing a pressure-reducing transfer means and adjusting the pressure applied to the liquid. The court noted that:
“Supersaturated” means a state in which the amount of dissolved gas exceeds the solubility at a given temperature.
“Laminar flow” refers to a regular flow with aligned velocity directions, achievable when flow rates are sufficiently slow.
The variables of tube inner diameter, tube length, and pressure of the gas dissolving means influence flow velocity and dissolution efficiency according to technical common knowledge.
Based on the specification and comparative examples, a skilled person could select appropriate values for the tube length, inner diameter, and applied pressure to achieve the intended supersaturation and stable maintenance. Therefore, the court concluded that the support requirement was satisfied.
Significance of the Case
This case clarifies that claims with specific numerical exclusions (so-called “excluding claims”) can meet the support requirement if the specification, when combined with technical common knowledge, enables a skilled person to achieve the claimed technical effect. It highlights that strict numerical disclosure in the specification is not always necessary when skilled practitioners can deduce suitable ranges to solve the problem.
Practical Implications
Practitioners should note that while the court recognized support in this instance, examiners frequently reject similar “excluding claims” for lack of support. This case provides a logical framework for arguing in favor of support by demonstrating that the specification and general technical knowledge enable a skilled person to achieve the claimed effect, even if exact numerical thresholds are not explicitly disclosed.
